In In re Certain Magnetic Tape Cartridges and Components
Thereof, 337-TA-1058 (ITC October 2, 2018, Order),
Administrative Law Judge Cheney ruled that even if a
respondent is estopped from raising certain invalidity
challenges because it failed to raise them in a previously filed
IPR, the Office of Unfair Imports Investigations Staff
("Staff") can raise those very same
challenges.
Decision
On July 27, 2016, Sony Corporation (along with some affiliates,
collectively, "Sony") sued Fujifilm Holdings Corporation
(along with some affiliates, collectively, "Fujifilm")
for infringing a number of its patents, including U.S. Patent No.
6,979,501. Sony Corp. v. Fujifilm Holdings Corp., No.
1:16-cv-5988. Fujifilm responded by petitioning for inter
partes review. According to Fujifilm, the '501 patent was
anticipated and rendered obvious by a number of prior art
references. The PTAB instituted review on all grounds, but it
ultimately upheld the '501 patent. Fujifilm Corp. v.
